IP Law Daily Watch manufacturer may be liable for using Apollo 15 astronaut’s persona to promote commemorative watches
Friday, April 6, 2018

Watch manufacturer may be liable for using Apollo 15 astronaut’s persona to promote commemorative watches

By Robert Margolis, J.D.

Apollo 15 astronaut Colonel David Randolph Scott may proceed to trial on his publicity rights claims against Citizen Watch Company of America, Inc. ("Bulova") and Sterling Jewelers, Inc., d/b/a Kay Jewelers ("Kay"), the manufacturer and retailer of a watch commemorating that lunar mission, the federal district court in San Jose has held. Disputed factual issues over defendants’ use of Scott’s persona in promoting the watch were sufficient to defeat their summary judgment motion (Scott v. Citizen Watch Company of America, Inc., April 4, 2018, Cousins, N.).

Scott was an astronaut on the Apollo 15 mission and the seventh person to walk on the moon. Before Apollo 15, Bulova representatives gave him two Bulova timepieces to use in space, including a chronograph that he wore to the moon. In 2014, Bulova began creating a commemorative timepiece, based on the chronograph that Scott wore on Apollo 15. In early 2016, Bulova began marketing the commemorative chronograph, including referencing Scott’s original chronograph and using his identity in several forms. The marketing materials that form the basis of Scott’s claims, include: (1) online promotions with references to Scott, photos of Scott, and a video with his voice; (2) a promotional booklet; and (3) other public communications.

Scott brought several claims against Bulova and Kay: (1) common law invasion of right of publicity through commercial appropriation of name and likeness; (2) common law invasion of right of privacy; (3) violation of California Civil Code § 3344; (4) false advertising under the Lanham Act, 15 U.S.C. § 1125; (5) false designation of origin under the Lanham Act, 15 U.S.C. § 1125; (6) negligence; (7) intentional infliction of emotional distress; and (8) negligent infliction of emotional distress. The defendants moved for summary judgment, and the court found disputed factual issues sufficient to deny the motion as to the right of publicity and Lanham Act claims, though it granted the motion on the emotional distress claims.

Publicity claims. The court considered Scott’s two common law right of publicity claims to be "really a single claim," and evaluated them as such. It also noted that the California right of publicity statutory claim under California Civil Code § 3344 complements, rather than codifies, the common law. Noting that the common law and statutory claims nevertheless involve the same elements, the court considered them together. Bulova did not contest any of the elements of Scott’s claim, but rather raised defenses that it contended defeat the claim. The court found disputed factual issues on each defense.

Incidental use. Bulova first argued that defendants’ use of Scott’s persona was "incidental," and therefore does not support a publicity rights action. The "incidental use" doctrine in California law rests on the premise that an incidental use "has no commercial value and allowing recovery to anyone briefly depicted or referred to would unduly burden expressive activity." Yeager v. Cingular Wireless LLC, 673 F. Supp. 2d 1089, 1100 (E.D. Cal. 2009). The court held that whether Scott’s identity adds commercial value is a question for the jury, noting that Scott presented evidence that his identity was used repeatedly and defendants intended that use to take advantage of Scott’s reputation. The court cited the frequency with which Scott’s name and title of Apollo 15 "mission commander" appears in defendants’ marketing materials.

Public interest. Bulova next argued that the First Amendment protects defendants’ use of Scott’s identity as a matter of public interest. This issue boiled down to "the nature of the precise information conveyed and the context of the communication." Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 410. While information about Scott and Apollo 15 may have a public interest component, the context of defendants’ use of it—to sell watches, rather than provide information—created an issue of fact as to this defense, the court held. As the court explained after reviewing several leading California cases, the determinative inquiry is whether Scott’s identity was the commercial product itself, or instead used to promote some other product. In this case, it was the latter, since Scott’s identity was being used to sell watches. The court distinguished Scott’s claim from prior cases involving informational trading cards and commemorative newspapers. While Bulova could boast about the connection of the chronograph watch to the Apollo 15 mission, that did not "make Scott fair game," the court held.

False designation. The court also denied summary judgment on the false designation of origin claim. Scott’s claim rested on the theory that defendants’ advertisements falsely imply that Scott endorses or approves the watches. Bulova argued that Scott lacks a trademark on which to base a Lanham Act claim, but the court held that he does not need to have a registered trademark to bring his claim. In a false endorsement case involving a celebrity, the individual’s "persona" serves as the "mark," the strength of which refers to "the level of recognition the celebrity enjoys among members of society." White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992). Given Scott’s place in history as the seventh man to walk on the moon, and the evidence that he is recognizable in society, the court held there to be a factual dispute as to whether his "persona" suffices to be a "mark."

The court also rejected Bulova’s argument that its inclusion of Scott’s identity in advertisements is non-actionable nominative fair use. First, that defense applies only where the defendant uses a trademark in connection with the plaintiff’s product, not its own. Moreover, the defense only applies where the defendant does nothing to imply or suggest that the plaintiff sponsors or endorses the defendant’s product. This is "a highly factual matter … not suitable for summary judgment," the court held.

Innocent retailer. In addition to joining Bulova’s motion, Kay moved separately for summary judgment, based on what the court called "a single unpersuasive argument" that Kay is just an "innocent retailer" that should not be liable because it had no role in authoring any of the materials that used Scott’s persona. The court rejected Kay’s authority from other jurisdictions that held that misappropriation claims do not apply to passive downstream distributors, noting that neither party found a Ninth Circuit or California case with such a rule.

The case is No. 5:17-cv-00436-NC.

Attorneys: Christopher Robert Mezzetti (Mezzetti Law Firm Inc.) for David Randolph Scott. Ian Ballon (Greenberg Traurig LLP) for Citizen Watch Co. of America, Inc. Dhruv Mohan Sharma (McGlinchey Stafford PLLC) for Sterling Jewelers, Inc. d/b/a Kay Jewelers.

Companies: Citizen Watch Co. of America, Inc.; Sterling Jewelers, Inc. d/b/a Kay Jewelers

MainStory: TopStory PublicityRights CaliforniaNews

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